To: | Waffles Holdings LLC (meyer@afpopcorn.com) |
Subject: | U.S. Trademark Application Serial No. 88441720 - OFF THE GRID - N/A |
Sent: | March 30, 2020 09:32:07 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88441720
Mark: OFF THE GRID
|
|
Correspondence Address:
|
|
Applicant: Waffles Holdings LLC
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: March 30, 2020
On August 15, 2019, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 88094523 and 88172653. The following prior-pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark: Application Serial No. 88094523. However, the following prior-pending application has since registered: Application Serial No. 88094523. Therefore, registration is refused as follows.
Registration Refused – Section 2(d) Likelihood of Confusion
The applicant’s mark is OFF THE GRID for “Waffle crisps; Waffle chips.” The registered mark is OFF THE GRID for “Waffles.”
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarities of the Marks
In the present case, applicant’s mark is OFF THE GRID and registrant’s mark is OFF THE GRID. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
The applicant’s goods are “Waffle crisps; Waffle chips.” The registrant’s goods are “Waffles.” Both the applicant and the registrant provide waffles products. The goods are highly related.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Accordingly, registration is refused under Trademark Act Section 2(d).
Applicant May Respond
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
How to respond. Click to file a response to this nonfinal Office action.
/Jessica Ellinger Fathy/
Trademark Examining Attorney
Law Office 110
U.S. Patent and Trademark Office
(571) 272-6582
jessica.fathy@uspto.gov
RESPONSE GUIDANCE